Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The Prudential Insurance Company of America , Newark, NJ, USA ("Complainant"). The Respondent is Bigxa Co.. Ltd ("Respondent").

The domain name at issue is "theprudential.com" registered with Network Solutions.

The Panelist James P. Buchele certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 24, 2000; The Forum received a hard copy of the Complaint on August 24, 2000.

On August 25, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "theprudential.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On August 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 18, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@theprudential.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 26, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant asserts that the domain name "theprudential.com" is identical to "THE PRUDENTIAL" combination marks owned by Complainant. In addition, the source-identifying root of the domain name registered by Respondent, "prudential," is identical to the "PRUDENTIAL" and "PRUDENTIAL" combination marks owned by Complainant. Further, the domain name in its entirety is confusingly similar to the family of "PRUDENTIAL" and "PRUDENTIAL" combination marks owned by Complainant.

Complainant asserts that Respondent has no rights or legitimate interest in the domain name. Respondent has never made use of the domain name. In light of the Complainant’s numerous trademark registrations, there is no legitimate basis for Respondent to have registered or to maintain the domain name.

Complainant asserts that Respondent has registered the domain name and is using it in bad faith. Complainant’s marks are well known to the consuming public, and therefore, the mere registration of a domain name which incorporates Complainant’s mark, without a legitimate interest in the "Prudential" name, can be nothing other than bad faith. Respondent’s refusal to answer Complainant’s attempted contacts also evidences bad faith.

B. Respondent

Respondent submitted no response in this matter. Because Respondent has failed to submit a response, based on the Policy, the Panel accepts as true all allegations set for the Complaint. ICANN Rule 14(b).

Complainant has used its "PRUDENTIAL" mark for 125 years in connection with a wide variety of insurance, securities, investment, financial and real estate services throughout the United States and the world, including Korea. Complainant operates an insurance business in Korea, Prudential Life Insurance Co., Ltd. The "PRUDENTIAL" trademark is the subject of trademark registrations in over 50 countries, including Korea and the United States. In Korea, Prudential owns 46 Korean trademark registrations for its "PRUDENTIAL" marks in English and Korean.

Respondent is a Korean company. On October 30, 1997, Respondent registered the domain name "theprudential.com."

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The domain name "theprudential.com" is identical to or confusingly similar to Complainant’s various "PRUDENTIAL" marks, including "THE PRUDENTIAL". The evidence presented indicates that Complainant is the holder of numerous trademark registrations worldwide, including in Korea. The only difference between the domain name and Complainant’s various trademarks is the addition of the words "the" and ". Com" in Respondent’s domain name. Such differences are minor and do nothing to cause and real distinction between the names or prevent confusion. See Hormel Foods Corp. and Hormel Foods, LLC v. Spotted Cow Media, FA 95067 (Nat. Arb. Forum July 31, 2000) (finding that the domain name <kidskitchen.com> is identical to the Complainant’s trademark KIDSKITCHEN); Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO April 11, 2000) (finding that <homedirector.com> is identical to Complainant’s mark, HOME DIRECTOR). See also Cardservice Int’l, Inc. v. McGee, 950 F.Supp. 737 (E.D.Va.) aff’d, 129 F.3d 1258 (4^th Cir. 1997) (finding <cardservice.com> confusingly similar to "CARD SERVICE" trademark; permanent injunction granted).

Therefore, Complainant has proved that the domain name in question is identical or confusingly similar to a trademark or service mark in which it has rights. See ICANN Policy ¶ 4(a)(i).

The name "PRUDENTIAL" is not generic or descriptive. If it were, Respondent and others would likely be entitled to its use and registration. See Fifty Plus Media Corp. v. Digital Income, Inc. FA94924, Nat. Arb. Forum, July 17, 2000 (discussing generic and descriptive names). Respondent has not made a legitimate noncommercial use of the domain name. Nor has Respondent been known by or connected to the name "theprudential.com".

Respondent failed to produce any evidence sufficient to rebut Complainant’s allegations. This failure entitles the Panel to conclude that Respondent has no such rights or legitimate interests with respect to the domain names at issue. See Parfumes Christian Dior v. QTR Corp., No. D2000-0023 (WIPO Mar. 9, 2000). Therefore, Complainant has proved that the Respondent has no rights or legitimate interest in respect of the domain name "theprudential.com". See ICANN Policy ¶ 4(b)(ii).

Respondent knew or should have known of the Complainant’s usage of the marks "PRUDENTIAL" and "THE PRUDENTIAL" prior to Respondent’s registration of the domain name, since Complainant operates an insurance business in Korea. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is "so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith"). Id.

In addition to considering evidence of registration and use in bad faith under the ICANN Policy, this Panel may consider other circumstances which evidence bad faith, including factors listed in the Anticybersquatting Consumer Protection Act ("ACPA"). See ICANN Policy ¶ 4(b). Under the ACPA, factors for determining bad faith intent include (I) the trademark or other intellectual property rights of the person, if any, in the domain name; and (IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of section 43. See 15 U.S.C. § 1125(d)(1)(B). Here, the Respondent has failed to show any trademark or intellectual property rights in the domain name. In addition, the domain name incorporates a mark that is clearly distinctive, if not famous. Therefore, Complainant has proved that the domain name in question has been registered and is being used in bad faith. See ICANN Policy ¶ 4(b)(iii).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.

Accordingly, for all of the forgoing reasons, it is ordered that the domain name "theprudential.com" be transferred from the Respondent to the Complainant.